The Complainant is Belstaff S.R.L. of Milano, Italy, represented by Hogan Lovells International LLP, Germany.
The Respondent is andyTim of Albania. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2012. On April 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 18, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 23, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On April 24, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2012.
The Center appointed Linda Chang as the sole panelist in this matter on May 31, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant, originally founded in 1924 in Staffordshire, United Kingdom of Great Britain and Northern Ireland, is an internationally-recognized company and manufacturer of high-quality clothing and accessories. The Complainant produces clothing and accessories which have taken on an iconic status within the fashion community.
The Complainant owns a number of trademark rights to BELSTAFF, including Community Trademark No. 335810 registered on September 15, 1998 in Class 25, Community Trademark No. 2189025 registered on September 5, 2002 in Classes 3, 9 and 18, and Community Trademark No. 7439102 registered on June 9, 2009 in Classes 14, 16, 24 and 35.
The Complainant invests substantial time and resources in the design, manufacture, advertising and sale of its products. The Complainant currently is present in more than 1, 000 points of sale worldwide.
The Domain Name was registered on November 1, 2011 and directed Internet users to a website selling purported Belstaff products. 5. Language of the Proceedings
Under paragraph 11 of the Rules, the language of the proceedings shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the panel determines otherwise.
The Complainant initially filed its Complaint in English and requested for English to be the language of the proceedings for the following reasons:
(a) There is no connection between the Domain Name or its connected website to the Chinese language, including i) the Domain Name is partly in German (“Jacken”) and partly in English (“outlet”), but does not include a Chinese term; ii) the Domain Name consists of Latin letters rather than Chinese letters; iii) the content of the website has no connection to the Chinese language.
(b) The English language is one that can be understood by all parties. As the Domain Name consists of Latin letters rather than Chinese letters and is connected to a website in English and German, the Respondent is more likely than not to have a sufficient understanding of the English language. Besides, the Respondent, who resides in an English speaking country, Australia1 as recorded in the WhoIs, can be expected to have sufficient knowledge of the English language. On the part of the Complainant, though it is based in Italy while its representative is based in Germany, it would not need any translation for an English proceeding.
(c) It would be disproportionate to require the Complainant to submit a translated Complaint. The activities carried out via the Domain Name are illegal, and requesting the Complainant to submit a translated Complaint would trigger delays and unduly protect the illegal activities of the Respondent.
As confirmed by the Registrar, the language of the Registration Agreement is Chinese. Based on the evidence presented on the record, no agreement appears to have been reached between the Complainant and the Respondent that the language of the proceedings should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, and it is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.
The Panel notes that the website to which the Domain Name used to resolve displays its contents partly in English and partly in German and there is no version of the Domain Name with contents in Chinese. The Panel also notes that the Respondent has been given a fair opportunity to object to the use of English as the language of the proceedings but did not do so.
The Panel has also taken into consideration that the Complainant has submitted all documents in English, and additional expense and delay would likely be incurred if the Complaint is requested to be translated into Chinese.
Using English as the language of the proceedings will not be prejudicial to the Respondent in its ability to articulate the arguments for the case, while if the proceedings are to be conducted in Chinese, the Complainant would be unfairly disadvantaged by being forced to translate the Complaint into Chinese. Moreover, the Panel notes that all of the Center’s communications with the Parties have been transmitted in both English and Chinese.
Considering all of these circumstances, the Panel decides that the language of the proceedings shall be English and the decision will be rendered in English. 6. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is highly similar to its BELSTAFF trademark. The addition of merely generic descriptive terms “Jacken” and “outlet” effects no or little change in the Domain Name and thus does not serve sufficiently to distinguish or differentiate the Domain Name from the Complainant’s BELSTAFF trademark. The addition of the generic top-level domain “.com” to the Domain Name also does not avoid confusing similarity.
The Complainant further contends that the Respondent has no rights or legitimate interest in respect of the Domain Name. The Respondent does not have any trademark rights in BELSTAFF or any variations thereof and the Complainant has never authorized, licensed or permitted the Respondent to use the BELSTAFF trademark. Moreover, there is no suggestion that the Respondent could possibly invoke any of the circumstances listed in paragraph 4(c) of the Policy as i) the Respondent’s use of the Domain Name does not constitute bona fide use; ii) the Respondent is not commonly known by the term “Belstaff”; and iii) the Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
The Complainant finally contends that the Respondent has registered and is using the Domain Name in bad faith. The Complainant is well-known and it is inconceivable that the Respondent was unaware of the Complainant and its BELSTAFF trademark when registering the Domain Name. The Domain Name could not have been chosen for any other reason than seeking to benefit from the goodwill and reputation for high-quality products attached to the Complainant’s BELSTAFF trademark and to attract, for commercial gain, Internet users to the Respondent’s website. Besides, the Respondent tries to internationally attract Internet users to visit its website with the intention of fraudulently benefiting from public confusion by creating a likelihood of confusion among Internet users between the Complainant’s famous trademark and the source or affiliation of the Respondent’s website. Moreover, the website linked to the Domain Name is being used to disrupt the business of the Complainant. The Respondent’s offer for sale of counterfeit or unauthorized imitations of products that bear the Complainant’s BELSTAFF trademark could cause considerable damage to the Complainant’s rights and its legitimate business interests. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings
To succeed in a complaint, the complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the panel of the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Based on the evidence presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has introduced evidence demonstrating its established rights in the BELSTAFF trademark. The Complainant holds a number of BELSTAFF trademarks, inter alia, Community Trademark No. 335810 registered on September 15, 1998 in Class 25, Community Trademark No. 2189025 registered on September 5, 2002 in Classes 3, 9 and 18, and Community Trademark No. 7439102 registered on June 9, 2009 in Classes 14, 16, 24 and 35. The registration of the afore-mentioned BELSTAFF trademarks predates that of the Domain Name.
The Domain Name consists of the BELSTAFF trademark in its entirety, together with words “jacken” and “outlet”, two hyphens and the generic top-level domain suffix “.com”. The Panel finds that it is already an established principle that the addition of generic terms such as “jacken” and “outlet”, as well as the suffix “.com” as the top level domain indicator does not sufficiently differentiate the domain name from the trademark concerned. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”), and also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (“a domain name is ‘identical or confusing similar’ to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”).
The Panel further holds that addition of the terms “jacken” and “outlet” cannot avoid the likely similarity but instead reinforces the likelihood of confusion as the Domain Name directly refers to the business of the Complainant. Adding descriptive terms to the Domain Name is insufficient to distinguish the Domain Name from the Complainant’s BELSTAFF trademark. See Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033 (“It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”) and also PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant’s BELSTAFF trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that respondent has been commonly known by the domain name; or
(iii) legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the circumstances where the Complainant possesses exclusive rights to the BELSTAFF trademark while the Respondent seems to have no trademark rights in BELSTAFF or any variations thereof, the Complainant has never authorized, licensed or permitted the Respondent to use its trademark BELSTAFF, and the Respondent is silent to the Complainant’s contentions, the Panel is satisfied that the Respondent does not have rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy. It is well-established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
As the Respondent has chosen to remain silent on this issue, the Panel holds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy and the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The Complainant is well-known for the production of luxury clothing and accessories which have taken on an iconic status within the fashion community. Additionally, the word “Belstaff” is highly distinctive. The Panel views that the incorporation of the Complainant’s distinctive trademark in the Domain Name indicates that the Respondent had knowledge of the Complainant and its BELSTAFF trademark at the time of registering the Domain Name. Bad faith can be found when the respondent was aware of the complainant’s trademark at the time of registering the domain name. See LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; and Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464.
As evidenced by the documents presented by the Complainant, the Respondent once used the Domain Name to direct Internet users to a website selling purported Belstaff products. The Respondent uses the Complainant’s BELSTAFF mark not only in the URL but also on the homepage of the website as well as on various products offered for sale, so as to falsely suggest an affiliation to the Complainant and its BELSTAFF mark. Given the reputation of the BELSTAFF trademark, the Panel finds that the Internet users are very likely to be confused and misled into the belief that the Domain Name is connected with the Complainant. Thus, the Panel determines that bad faith is established by the Respondent’s use of the Domain Name to intentionally confuse Internet users and to trade on the Complainant's rights and reputation.
The Complainant claims that the Respondent offers for sale counterfeit or unauthorized imitations of goods that bear the BELSTAFF trademark on the web site to which the Domain Name is resolved as the Complainant has neither manufactured the goods nor authorized or permitted the production of these goods by the Respondent. The Respondent could have countered with arguments and evidence to prove otherwise but has chosen not to do so. Considering all the circumstances, the Panel is satisfied that the Respondent is using the Domain Name to solicit business for its counterfeit products and bad faith exists. See Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019.
Moreover, the Respondent has chosen not to respond to contentions of the Complainant and such failure may be further indicative of bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610, “The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787)”.
In light of the above facts and reasons, the Panel therefore determines that the Domain Name was registered and is being used in bad faith pursuant to the Policy. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Linda Chang
Sole Panelist
Dated: July 5, 2012
1 The Panel notes that according to the WhoIs records, the “Registrant Country”for the Domain Name is “AL”, which stands for Albania.
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